Patents Post-Grant: Evidence of Ongoing Patent Reexamination at Trial

Willfullness Determination Opens Door to Prejudice One purpose for introducing evidence of an ongoing patent reexamination in a parallel litigation is to avoid a post filing (i.e., complaint) willfulness determination. The existence of an ongoing patent reexamination may be admitted to demonstrate...

Patents Post-Grant: CAFC Again Considers Patent Reexamination Disclaimer

Disclaimer Results in Reversal of $56 Million Dollar Damage Award As previously discussed, the CAFC has agreed to reconsider Marine Polymer Technologies, Inc. v. HemCon, Inc. ( here ) en banc . The Court will reconsider whether or not intervening rights are created for a claim that is not literally...

Patents Post-Grant: USPTO Explanation of Increased Fees

Cost Burdens of Post Grant Proceedings Drive Increased Fee Determinations As discussed last week, the USPTO is proposing a significant increase to the fee for ex parte patent reexamination (EXP). Likewise, the new supplemental examination (SE) fee, should prosecution be required, is on the order of...

Patents Post-Grant: Ongoing Patent Reexamination Aids Summary Judgment on Invalidity

Court Cites ACP as Supportive of Summary Judgment of Invalidity Generally, when reexamination evidence is used to support contentions of patent claim invalidity, the accused infringers do not simply attempt to equate the grant of a request for reexamination with patent claim invalidity. Instead, the...

Patents Post-Grant: Post Grant Petitions to More Closely Scrutinize Means Plus Function Claims

MPF Claim Interpretation Required to Initiate New AIA Proceedings In past posts I have pointed out that in analyzing requests for patent reexamination, Examiner's are trained to apply a Broadest Reasonable Interpretation (BRI) to patented claims. Unfortunately, over emphasis upon this standard...

Patents Post-Grant: AIA Change to Reexamination Standard Aids Motion to Stay

Court Cites Change in Inter Partes Reexamination Standard as Justifying Stay When faced with the assertion of a patent of questionable validity prospective defendants increasingly resort to patent reexamination. Once a suit is filed, the opportunity to obtain a stay of an ongoing district court infringement...

Patents Post-Grant: Discovery Practices before the Patent Trial & Appeal Board

Practitioners Preoccupied with Discovery Opportunities Generally speaking, "discovery" is a litigation process by which information or facts pertinent to a case can be systematically obtained from an opponent or third party prior to trial. Of course, discovery is not permitted in patent...

Patents Post-Grant: CAFC Probes Statutory Basis for Third Party Declaration Filings in Patent Reexamination

Can Declaration Evidence be Considered "Written Comments" Since the advent of inter partes patent reexamination (IPX), both Requesters and Patentees alike have relied upon declaration evidence to bolster their respective positions. Practically speaking, the lack of RCE practice in patent...

Patents Post-Grant: Taxing USPTO Reexamination Resources

Tax Strategy Patent Reexamination Continues Despite AIA Provision Back in January of 2011, the Director of the USPTO initiated reexamination of U.S. Patent 6,567,790 ( here ), which claims a method of minimizing transfer tax liability. In 2007, the '790 Patent was asserted against a corporate...

Troutman Sanders LLP: Litigation and Reexamination Lead to Different Results in Patent Case

By Dabney Carr In a precedential decision on May 17, the Federal Circuit affirmed the PTO's rejection in reexamination of patent claims on the grounds of obviousness even though the Court had previously affirmed a district court's judgment as a matter of law that the same claims were not obvious...

Patents Post-Grant: Judge Newman again Questions the Constitutionality of “Do Over” Patent Reexamination

AFC Forced to Disturb Earlier Ruling Based on More Liberal Patent Reexamination Standards Patent reexamination is often initiated in parallel with an ongoing infringement litigation. In some cases, an infringer that fails to prove invalidity in the courts can effectively "undo" the effect...

Patents Post-Grant: BPAI Reversal of All Rejections Dooms Patent in Reexamination

Inability to Properly Examine Means-Plus-Function Claims in Patent Reexamination Creates Perplexing Result Unlike most claims in patent reexamination, means-plus-function claims may not be properly accorded a broadest reasonable claim interpretation. Instead, as outlined by MPEP 2181 - 2183 , the...

Patents Post-Grant: Perceived Patent Reexamination Misstep Haunts Plaintiff

A successful reexamination from a defendant perspective does not always result in an overt claim change or cancellation. In other words, even where claims are confirmed, statements in the reexamination record that are inconsistent with arguments made in a concurrent litigation may provide key evidence...

Patents Post-Grant: Arbitration Materials Withheld from USPTO Reexamination

Egregious Misconduct Claim Shot Down by District Court As most patent reexaminations are conducted in parallel to a related litigation, it is important that the USPTO be informed of the progress of a parallel litigation. For this reason, MPEP 2282; 2686 permit the filing of litigation notices by any...

Patents Post-Grant: Prometheus Based Patent Reexamination Requests?

Patentable Subject Matter Challenge Advanced in Patent Reexamination This past March, as most in the patent community are well aware, the Supreme Court recalibrated 35 U.S.C. § 101 in Mayo Collaborative Services v. Prometheus . The decision held that certain patents of Prometheus Laboratories...

Patents Post-Grant: Enhanced Patent Reexamination Speed Coming Soon?

Reduction in Incoming Requests & InterPartes Workload to Free Up Resources Much attention has been given to the contested proceedings of the newly formed Patent Trial & Appeal Board (PTAB) since enactment of the America Invents Act (AIA) last fall. Starting in September of 2012, these new...

Patents Post-Grant: Getting the CAFC to Take Note of Your Patent Reexamination

Working Patent Reexamination Developments Into the Appeal Record Previously, I discussed how an appellant sought relief at the CAFC from an earlier Markman Order under Fed. R. Civ. P. 60(b) . The Appellant argued on appeal that a recently concluded ex parte patent reexamination of the patent at issue...

Patents Post-Grant: Patent Reexamination Surge Headed to USPTO

Imminent AIA Changes to Drive Significant Patent Reexamination Filings in the Near Term In one month's time, the USPTO will simultaneously switch over to a new patent reexamination fee structure, and to a new inter partes trial model of the Patent Trial & Appeal Board (PTAB). These changes...

Fitch, Even, Tabin & Flannery LLP: USPTO Issues Final Rules for Supplemental Examination

As we reported earlier, on August 14, 2012, the U.S. Patent and Trademark Office (USPTO) published final rules in the Federal Register implementing supplemental examination provisions and revised reexamination fees. The patent owner may file a request for supplemental examination of a patent to consider...

Patents Post-Grant: CRU Workload Extending Patent Reexamination Pendency?

Reexamination Filing Surge Dismissed as Speculative Back in September, I explained that the USPTO received an unprecedented number of reexamination filings in the closing days before the September 16th . This surge was a result of several factors: First, the fee for ex parte patent examination was...

Patents Post-Grant: CAFC Considers Lack of Discovery in Patent Reexamination

Federal Circuit Unlikely to Open the Door to Discovery via Subpoena in Inter Partes Patent Reexamination Generally speaking, "discovery" is a litigation process by which information or facts pertinent to a case can be systematically obtained from an opponent or third party prior to trial...

Patents Post-Grant: PTO Scolded for Lax Patent Reexamination Practices

Failure to Focus Means Plus Function Debate in Patent Reexamination Last week [Jan. 8th] in In re Avid Identification Systems Inc . [ enhanced version available to lexis.com subscribers ], the CAFC affirmed the USPTO's rejection of certain claims of U.S. Patent 5,499,017 in ex parte patent reexamination...

Patents Post-Grant: Patent Reexamination is Getting Faster

Decrease in Patent Reexamination Docket Leads to Faster Orders Back on September 16, 2012, the America Invents Act (AIA) replaced the old inter partes patent reexamination system with a new proceeding, known as Inter Partes Review (IPR). Since petitions for IPR are not handled by patent examiners...

PTAB Closely Scrutinizes Petition Grounds

PTAB Selective on Trial Grounds Having now completed the multi-city tour for the Practicing Law Institute's USPTO Post Grant Patent Trials 2013 (on demand program here ), I am still struck by the degree of doom and gloom expressed by the patent monetization crowd. Throughout the program stops...

Abusive Patent Litigation Practices Already More Difficult?

Congress Tinkers with Further Patent Reforms It seems Congress has chosen to ignore the significant impact the America Invents Act (AIA) has had on pure patent enforcement entities. There is simply no other rationale to explain why a new patent reform bill is contemplated by Congress near every week...